DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Allowable Subject Matter
Claim 2 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claim Objections
Claim 1 is objected to because of the following informalities: claims should only have one period “.” at the end of the claim, therefore, the examiner suggests the following amendment:
Claim 1, lines 2-8: -- [[a.]] a) a base;
[[b.]] b) spikes protruding from the base front, at an angle of less than ninety degrees and being of length sufficient to support a baby bottle;
[[c.]] c) tips on said spikes providing grip and preventing scratches on bottles;
[[d.]] d) a removable drip tray attached to the base bottom;
[[e.]] e) mounting brackets near the top of the base back; and
[[f.]] f) mounting indentations on the base back corresponding with said mounting brackets.—Appropriate correction is required.
Claim 2 is objected to because of the following informalities: for better claim construction and consistency throughout the claims the examiner suggests the following amendment:
Claim 2, line 1: -- [[A]] The wall-mountable bottle draining apparatus --. Appropriate correction is required.
Claim 2, line 4: -- said at least one removable drainage basket --. Appropriate correction is required.
Claim 2, line 5: -- said at least one removable drainage basket --. Appropriate correction is required.
Claim 2, line 6: -- configured to slide through—Appropriate correction is required.
Claim 2, line 7: -- said at least one removable drainage basket --. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-2 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation "the base front" in line 3 of the claim. There is insufficient antecedent basis for this limitation in the claim. Appropriate correction is required.
Regarding claim 1, line 5, the following limitation: “providing grip and preventing scratches” appear to be method steps claimed within an apparatus claim. Appropriate correction is required.
The examiner suggest the following amendment:
Claim 1, line 5: -- tips on said spikes for providing grips and preventing scratches on bottles --. Appropriate correction is required.
Claim 1 recites the limitation "the base bottom" in line 6 of the claim. There is insufficient antecedent basis for this limitation in the claim. Appropriate correction is required.
Claim 1 recites the limitation "the top" in line 7 of the claim. There is insufficient antecedent basis for this limitation in the claim. Appropriate correction is required.
Claim 1 recites the limitation "the base back" in line 7 of the claim. There is insufficient antecedent basis for this limitation in the claim. Appropriate correction is required.
Claim 2 recites the limitation "the top" in line 3 of the claim. There is insufficient antecedent basis for this limitation in the claim. Appropriate correction is required.
Claim 2 recites the limitation "said back" in line 3 of the claim. There is insufficient antecedent basis for this limitation in the claim. The examiner suggests the following amendment:
Claim 2, line 3: -- [[the]] a top of each end of [[said]] a back of said at least one drainage basket – Appropriate correction is required.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Betts 5,884,784 in view of Chan 2017/0014016; Taylor 2006/0196842; and Sisto 2023/0292920.
Regarding claim 1, as best understood, Betts discloses a wall-mounted bottle draining apparatus (Fig 1, #12) comprising:
a) a base (Fig 1, #14 & #40) having a base bottom (Fig 1, #40) and a base back (Fig 3, #52);
b. spikes (Fig 1, #26) protruding from the base front (Fig 1, #14) or (Fig 2, #18), at an angle of less than ninety degrees and being of length sufficient to support a baby bottle;
e) mounting brackets (Fig 3, #46) (col 3, lines 22-24) near the top of the base back (Fig 3, #52).
Betts has been discussed above but does not explicitly teach c) tips on said spikes providing grip and preventing scratches on bottles; and d) a removable drip tray that attaches to the base bottom; f) mounting indentations on the base back corresponding with said mounting brackets.
Chan discloses a draining apparatus (Fig 1) comprising spikes (annotated Fig 1 below) that are of length sufficient to support a baby bottle; and tips (annotated Fig 1 below) on said spikes (annotated Fig 1 below) that are capable of being used for providing grip and preventing scratches on bottles; and tips (annotated Fig 1 below) on said spikes (annotated Fig 1 below).
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Taylor discloses a storage rack that is capable of being used as a draining apparatus comprising a base bottom (annotated Fig 1 below) and d) a removable drip tray (annotated Fig 1 below) that attaches to the base bottom (annotated Fig 1 below).
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Sisto discloses a wall mounted shelf (Fig 12, #2000) that is capable of storing bottles or being used as a bottle draining apparatus comprising a) a base (Fig 12, #2100) comprising a base back (Fig 12, #2201 & #2300); e) mounting brackets (Fig 12, #2400) near the top of the base back (Fig 12, #2201 & #2300); and
f) mounting indentations (Fig 13A, #2310) or (Fig 13B, #2323) on the base back (Fig 12, #2201 & #2300) corresponding with said mounting brackets (Fig 12 & 14A, #2400).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to attach tips (Chan, annotated Fig 1 above) to the spikes (Betts, Fig 1, #12) of Betts in order to make the spikes (Betts, Fig 1, #12) of Betts more aesthetically appealing. Further, the substitution of one known (spike distal end type or tip shape) for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
It also would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to place a removable drip tray (Taylor, annotated Fig 1 above) on the base bottom (Betts, Fig 1, #40) of Betts in order to store small items on the wall-mounted bottle draining apparatus (Betts, Fig 1, #12) of Betts via the removable drip tray (Taylor, annotated Fig 1 above) without the small items getting lost.
It also would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to replace the mounting brackets (Betts, Fig 3, #46) of Betts with the mounting brackets (Sisto, Fig 12, #2400) of Sisto and form indentations (Sisto, Fig 13A, #2310) or (Sisto, Fig 13B, #2323) within the base back (Betts, Fig 3, #52) of Betts in order to further secure the wall mounted draining apparatus (Betts, Fig 1, #12) of Betts to a wall. Further, the substitution of one known wall mounting means for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Response to Arguments
Applicant's arguments filed have been fully considered but they are not persuasive.
Applicant’s arguments that “The Examiner proposes incorporating the tips of Chan into the spikes of Betts for purely "aesthetic appeal." The Applicant submits that this rationale is legally insufficient to support a prima facie case of obviousness. The Examiner states that Betts does not explicitly teach the claimed limitation of: "tips on said spikes providing grip and preventing scratches on bottles." The Examiner proposes combining Betts with Chan by attaching the tips of Chan to the spikes of Betts "in order to make the spikes. of Betts more aesthetically appealing." A rejection under § 103 must be supported by a showing that a skilled artisan would have been motivated to combine the references, and this motivation requires a reasoned basis or rationale. A motivation based solely on subjective aesthetic choice, divorced from an underlying functional improvement or structural problem, does not provide the rationale required for an obviousness rejection. A substitution for the sake of aesthetic purposes with no "suggestion, teaching, or motivation to combine the prior art references" is not sufficient to establish obviousness. Dembiczak, In re, 175 F.3d 994, 50 USPQ2d 1614 (Fed. Cir. 1999), 1000”. The mere presence of tips in Chan does not make it obvious to incorporate them into the Betts design with the specific purpose of providing grip and preventing scratches. The Examiner's argument focuses in part on the aesthetic appeal of the tip shape, not on its distinct function of grip/scratch prevention as claimed. The combination requires modifying a system for hard, durable laboratory items (Betts) using a component developed for delicate, non-scratch infant products (Chan). A skilled artisan in the art of laboratory racks would not be motivated to effect this combination merely for an aesthetic reason, especially when it addresses a functional problem (non-scratch surface) entirely outside the core utility of Betts. "[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977 (Fed. Cir. 2006), 988.” are not persuasive.
The examiner maintains that it is essential that any household accessory rack such as a wall mounted rack for kitchen supplies must have aesthetic appeal for commercial success. A consumer is less likely to by a kitchen rack that does not look nice therefore making modifications to improve the aesthetic appeal does support a prima facie case of obviousness.
Further to expand upon the statement that “It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to attach tips (Chan, annotated Fig 1 above) to the spikes (Betts, Fig 1, #12) of Betts in order to make the spikes (Betts, Fig 1, #12) of Betts more aesthetically appealing. Further, the substitution of one known (spike distal end type or tip shape) for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention” The examiner maintains that the tips (Chan, annotated Fig 1 above) of Chan are capable of providing grip and preventing scratches on bottles. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In the instant case, the examiner maintains that the tips (Chan, annotated Fig 1 above) of modified Betts are capable of providing grip and preventing scratches on bottles stored on the spikes (Betts, Fig 1, #26) of modified Betts. In addition Lamb 5,082,123 provides further evidence that it well known in the art for an end cap or tip (Lamb, Fig 8 or Fig 13, #46) to placed on a bar or spike (Lamb, Fig 8 or Fig 13, #16) wherein the end cap (Lamb, Fig 8 or Fig 13, #46) is for decorative purposes, but also protects against nicks from the hard inner core of the bar or spike (Lamb, Fig 8 or Fig 13, #16) (Lamb, col 3, lines 59-62).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the examiner maintains that a person having ordinary skill in the art would recognize that the tips (Chan, annotated Fig 1 above) of modified Betts are capable of providing grip and preventing scratches on bottles stored on the spikes (Betts, Fig 1, #26) of modified Betts. Further, the examiner maintains that Chan discloses that bottles (Fig 20, #96) are stored on the tips (Chan, annotated Fig 1 above) of the spikes (Chan, Fig 1, #50) of Chan. The examiner maintains that a person having ordinary skill in the art would recognize that the tips (Chan, annotated Fig 1 above) of modified Betts inherently would prevent scratches on bottles stored on the spikes (Betts, Fig 1, #26) especially since Chen discloses that bottles (Chan, Fig 20, #96) are stored on the tips (Chan, annotated Fig 1 above) of Chan. It is unlikely that Chan would attach tips (Chan, annotated Fig 1 above) on the spikes (Chan, Fig 1, #50) that would cause damage to the bottles (Chan, Fig 20, #96) of Chan. In addition Lamb 5,082,123 provides further evidence that it well known in the art for an end cap or tip (Lamb, Fig 8 or Fig 13, #46) to placed on a bar or spike (Lamb, Fig 8 or Fig 13, #16) wherein the end cap (Lamb, Fig 8 or Fig 13, #46) is for decorative purposes, but also protects against nicks from the hard inner core of the bar or spike (Lamb, Fig 8 or Fig 13, #16) (Lamb, col 3, lines 59-62). Further, the fact that the inventor has recognized another advantage which would flow naturally from following the combination of prior art references cannot be the basis for patentability when the differences would otherwise be obvious.
Applicant’s arguments that “The claimed tips serve a crucial functional purpose: "providing grip and preventing scratches on bottles." Betts is a laboratory drying rack system designed for rugged laboratory equipment and test tubes,which do not inherently share the fragility or non-scratch requirement of modern baby bottles. It has large, slanted, and horizontal support pegs (spikes) intended for laboratory equipment. Chan is a drying rack assembly for fragile baby accessories (bottles, nipples, valves). The tips in Chan are associated with the care of these delicate items.
A skilled artisan in the art of laboratory racks would not be motivated to effect this combination for a functional reason, when there is no suggestion that attaching the tips from Chan would addresses a functional problem within the core utility of Betts. "When determining the patentability of a claimed invention which combines two known elements, 'the question is whether there is something in the prior art as a whole to suggest the desirability, and thus the obviousness, of making the combination, Lindemann MaschinenfabrikGMBH V. American Hoist & Derrick Co., 730 F.2d 1452, 1462, 221 USPQ 481, 488 (Fed.Cir.1984)" Beattie, In re, 974 F.2d 1309, 24 USPQ2d 1040 (Fed. Cir. 1992). Furthermore, "the examiner must show reasons that the skilled artisan, confronted with the same problems as the inventor and with no knowledge of the claimed invention, would select the elements from the cited prior art references for combination in the manner claimed." Rouffet, In re, 149 F.3d 1350, 47 USPQ2d 1453 (Fed. Cir. 1998), 1357. The Examiner has not cited any suggestion of functional desirability to combine Betts with the tips of Chan” are not persuasive.
In determining obviousness, it is not necessary that the inventions of the references be physically combinable to render obvious the invention under review (In re Sneed, 710 F.2d 1544,1550 (Fed. Cir. 1983)). In particular, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention be expressly suggested in any one or all references (In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Furthermore, a person of ordinary skill in the art is also a person of ordinary creativity, not an automation (KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1742 (2007)). In an obviousness analysis it is not necessary to find precise teachings in the prior art directed to the specific subject matter claimed because inferences and creative steps that a person of ordinary skill in the art would employ can be taken into account (Id. at 1741). In the instant case, the examiner maintains that a person armed with Betts and Chan would have readily understood how the tips (Chan, annotated Fig 1 above) would be attached to the distal ends of the spikes (Betts, Fig 1, #26) of Betts without benefit of impermissible hindsight since the combination only involves well known elements combined in a well known manner. Such modifications are of ordinary innovation.
Applicant’s arguments that “The Examiner correctly identifies that Betts does not disclose "a removable drip tray that attaches to the base bottom." The Examiner proposes combining Taylor's removable drip tray with Betts "in order to store small items on the wall-mounted bottle draining apparatus without the small items getting lost." The Applicant respectfully submits this argument fails because it incorrectly conflates the accessory function of storage with the primary function of drainage. The Betts structure is a drainage system, utilizing a drip trough (40) and catch drain (56) for fluid management. The purpose of the entire apparatus is to dry items and collect effluent.
Taylor clearly discloses a storage rack for parts bins. A skilled artisan would not be motivated to subordinate the primary function of a high-efficiency drainage system (Betts) to accommodate an unrelated ancillary storage function from a distinct field, especially when the Betts apparatus already has a dedicated fluid collection feature. As noted, supra, "the examiner must show reasons that the skilled artisan, confronted with the same problems as the inventor and with no knowledge of the claimed invention, would select the elements from the cited prior art references for combination in the manner claimed." Rouffet, In re, 149 F.3d 1350, 47 USPQ2d 1453 (Fed.
Cir. 1998), 1357. The combination fails if the Examiner cannot show some teaching, suggestion, or reason to combine the references that is supported by a recognized technical objective. The Examiner has not cited any suggestion of functional desirability to combine Betts, which already has a drip tray, with the drip tray of Taylor for a purpose the drip tray of Taylor was not designed for. Combining elements from divergent fields for an incidental purpose is evidence of non- obviousness because it requires distorting the original purpose of the device. Despite a broadened view of obviousness, the court in KSR Int'l Co. V. Teleflex Inc., maintained that an important aspect to consider for obviousness is "whether the improvement is more than the predictable use of prior-art elements according to their established functions." Here, the established function of the Betts base is fluid management, and the established function of the removable drip tray of Taylor is fluid management. The combination is unpredictable because it forces the primary function (drainage) of Taylor to accommodate an unrelated, ancillary function (storage). The removable drip tray of Applicant's invention is not intended for storage. The drainage baskets (7) of the Applicant's invention that also function as storage baskets are placed on the front of the invention and allow any fluid to flow down into the removable drip tray. Therefore, the Examiner's suggestion that placing the removable drip tray of Taylor on the base bottom of Betts for storage via the drip tray of Betts does not reflect the configuration of Applicant's invention” are not persuasive.
The examiner maintains that Betts inherently has dual functions. The examiner agrees that Betts does functions has a drainage system having a base bottom (Betts, Fig 1, #40) for collecting water that drip from items that dry on the spikes (Betts, Fig 1, #26) wherein the base bottom (Betts, Fig 1, #40) that has a drain tube (Fig 1, #42) for draining out the water from the base bottom (Betts, Fig 1, #40). However, it is obvious to a person having ordinary skill in the art that at some point the items, such as bottles, stored on the draining apparatus (Betts, Fig 1) of modified Betts will eventually dry. The purpose of the draining apparatus (Betts, Fig 1) of modified Betts is so that the items, such as bottles, stored on the draining apparatus (Betts, Fig 1) will dry. So, when the items, such as bottles, stored on the draining apparatus (Betts, Fig 1) are dry and the water has been drained out of the base bottom (Betts, Fig 1, #40) of Betts, the examiner maintains that draining apparatus (Betts, Fig 1) still functions as a storage device to support those items, such as bottles, both during the drying process and after the items are dried. Further that examiner maintains that the bin (#200) or (Taylor, annotated Fig 1 above) of Taylor is capable of being used as a drip tray that collects water and/or storing small laboratory objects therein. The examiner maintains that a person having ordinary skill in the art would recognize that small laboratory objects, such as syringe needles may also need to be dried or just stored in a safe place where they will not get lost. The examiner maintains that small laboratory objects could not be stored on the base bottom (Betts, Fig 1, #40) of Betts because they make be small enough to pass through the drain tube (Betts, Fig 1, #42). Therefore, the examiner maintains that it would be advantageous to removably and/or temporarily place the dray tray (Taylor, annotated Fig 1 above) of Taylor on the base bottom (Betts, Fig 1, #40) of modified Betts. Further, the examiner maintains that placing the dray tray (Taylor, annotated Fig 1 above) of Taylor on the base bottom (Betts, Fig 1, #40) of modified Betts will not block the drain tube (Betts, Fig 1, #42) or prevent water from flowing out of the base bottom (Betts, Fig 1, #40) of modified Betts. Further, the examiner maintains that the dray tray (Taylor, annotated Fig 1 above) of Taylor can be placed on the base bottom (Betts, Fig 1, #40) of modified Betts when there are no items stored or drying on the apparatus of Betts or
the dray tray (Taylor, annotated Fig 1 above) of Taylor can be placed on the base bottom (Betts, Fig 1, #40) of modified Betts when the items stored on the apparatus of Betts are already dried and the water has already been drained away from the base bottom (Betts, Fig 1, #40) of modified Betts.
In determining obviousness, it is not necessary that the inventions of the references be physically combinable to render obvious the invention under review (In re Sneed, 710 F.2d 1544,1550 (Fed. Cir. 1983)). In particular, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention be expressly suggested in any one or all references (In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Furthermore, a person of ordinary skill in the art is also a person of ordinary creativity, not an automation (KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1742 (2007)). In an obviousness analysis it is not necessary to find precise teachings in the prior art directed to the specific subject matter claimed because inferences and creative steps that a person of ordinary skill in the art would employ can be taken into account (Id. at 1741). In the instant case, the examiner maintains that a person armed with Betts and Taylor would have readily understood how the removable drip tray (Taylor, annotated Fig 1 above) would be removably or temporally placed in the base bottom (Betts, Fig 1, #40) of modified Betts without benefit of impermissible hindsight since the combination only involves well known elements combined in a well known manner. Such modifications are of ordinary innovation.
Applicant’s argument that “Hindsight The Examiner correctly notes that Betts does not explicitly teach the limitation of "mounting indentations on the base back corresponding with said mounting brackets." The Examiner proposes replacing the mounting brackets of Betts with Sisto's brackets and indentations merely "in order to further secure the wall mounted draining apparatus to a wall." The Betts apparatus is described as "securely fastened to the wall." For the Examiner to justify
substituting one known mounting means for another, the Examiner must articulate a deficiency in the original structure that the new element is clearly taught to resolve. The burden remains on the Examiner to demonstrate why a person of ordinary skill in the art would have been motivated to replace the existing mounting brackets in Betts with the specific, corresponding brackets and indentations of Sisto. "It is well-settled that, '[i]n order for a claim to be invalid for obviousness over a combination of references, there must have been a motivation to combine the prior art references to produce the claimed invention.' Chiuminatta Concrete Concepts, Inc. V. Cardinal Indus., Inc., 145 F.3d 1303, 1312 (Fed. 1998)." McGinley V. Franklin Sports, Inc., 92 F.Supp.2d 1216 (D. Kan. 2000), 1224. Without citing evidence that the Betts mounting system failed or in any way needed improvement, the proposal to use Sisto's system, which is explicitly
designed for articles made from brittle material to prevent stress and fracture, is without basis. Sisto's mounting system addresses a technical problem specific to brittle, non-wood materials (preventing cracking during mounting). As the Examiner has not established that Betts' sheet material shares this problem, the alleged motivation relies on the Applicant's own knowledge of a specialized mounting solution, thereby constituting an improper hindsight reconstruction. "Combining prior art references without evidence of such a suggestion, teaching, or motivation simply takes the inventor's disclosure as a blueprint for piecing together the prior art to defeat
patentability--the essence of hindsight. See, e.g., Interconnect Planning Corp. V. Feil, 774 F.2d 1132, 1138, 227 USPQ 543, 547 (Fed.Cir.1985) Dembiczak, In re, 175 F.3d 994, 50 USPQ2d 1614 (Fed. Cir. 1999), 999. See also, "C.R. Bard, Inc. V. M3 Sys., Inc., 157 F.3d 1340, 1352, 48 USPQ2d 1225, 1232 (Fed. 1998) (describing 'teaching or suggestion or motivation [to combine]' as an "essential evidentiary component of an obviousness holding'); In re Rouffet, 149 F.3d 1350, 1359, 47 USPQ2d 1453, 1459 (Fed. 1998) ("the Board must identify specifically the reasons one of ordinary skill in the art would have been motivated to select the references and combine them'); In re Fritch, 972 F.2d 1260, 1265, 23 USPQ2d 1780, 1783 (Fed.Cir.1992) (examiner can satisfy burden of obviousness in light of combination 'only by showing some objective teaching [leading to the combination]")" Dembiczak, In re, 175 F.3d 994, 50 USPQ2d 1614 (Fed. Cir. 1999), 999.
The examiner maintains replacing the mounting brackets (Betts, Fig 3, #46) of modified Betts with the mounting brackets (Sisto, Fig 12, #2400) of Sisto and forming indentations (Sisto, Fig 13A, #2310) or (Sisto, Fig 13B, #2323) within the base back (Betts, Fig 3, #52) of Betts will further secure the wall mounted draining apparatus (Betts, Fig 1, #12) of Betts to a wall and enable Betts to hold heavier objects. Further, the substitution of one known wall mounting means for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
In determining obviousness, it is not necessary that the inventions of the references be physically combinable to render obvious the invention under review (In re Sneed, 710 F.2d 1544,1550 (Fed. Cir. 1983)). In particular, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention be expressly suggested in any one or all references (In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Furthermore, a person of ordinary skill in the art is also a person of ordinary creativity, not an automation (KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1742 (2007)). In an obviousness analysis it is not necessary to find precise teachings in the prior art directed to the specific subject matter claimed because inferences and creative steps that a person of ordinary skill in the art would employ can be taken into account (Id. at 1741). In the instant case, the examiner maintains that a person armed with Betts and Sisto would have readily understood how the mounting brackets (Betts, Fig 3, #46) of modified Betts would be replaced with the mounting brackets (Sisto, Fig 12, #2400) of Sisto and indentations (Sisto, Fig 13A, #2310) or (Sisto, Fig 13B, #2323) would be formed within the base back (Betts, Fig 3, #52) of modified Betts without benefit of impermissible hindsight since the combination only involves well known elements combined in a well known manner. Such modifications are of ordinary innovation.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Woods 2004/0069730; Cash 2014/0339183.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEVIN K BARNETT whose telephone number is (571)270-1159. The examiner can normally be reached Monday-Friday 11am-7:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Liu can be reached at 571-272-8227. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DEVIN K BARNETT/ Primary Examiner, Art Unit 3631